401.02    Initial Disclosures

37 CFR §  2.120(a)(2)  . Initial disclosures must be made no later than thirty days after the opening of the discovery period..

37 CFR § 2.120(a)(3)  . A party must make its initial disclosures prior to seeking discovery, absent modification of this requirement by a stipulation of the parties approved by the Board, or a motion granted by the Board or by order of the Board...

Fed. R. Civ. P. 26(a)(1) Initial Disclosures.

  • (A) In General. Except as exempted by Rule 26(a)(1)(B) or as otherwise stipulated or ordered by the court, a party must, without awaiting a discovery request, provide to the other parties:
    • (i) the name and, if known, the address and telephone number of each individual likely to have discoverable information — along with the subjects of that information — that the disclosing party may use to support its claims or defenses, unless the use would be solely for impeachment;
    • (ii) a copy — or a description by category and location — of all documents, electronically stored information, and tangible things that the disclosing party has in its possession, custody, or control and may use to support its claims or defenses, unless the use would be solely for impeachment ...

Each party involved in an inter partes proceeding is obligated to make initial disclosures to every other party, by the deadline set in the Board’s institution order, or as may be reset by stipulation of the parties approved by the Board, or by motion granted by the Board, or by order of the Board. [ Note 1.] A party may not seek discovery through traditional devices until after it has made its initial disclosures, absent modification of this requirement by a stipulation or motion of the parties approved by the Board, or upon Board order. [ Note 2.] Generally, each party will meet this obligation by complying with the disclosure requirements set forth in Fed. R. Civ. P. 26(a)(1)(A)(i) and (ii); subsections (iii) and (iv) of Rule 26(a)(1)(A) do not apply to Board proceedings. [ Note 3.] "Initial disclosures are not intended to substitute for all discovery but, rather, to prompt routine disclosure of names of potential witnesses and basic information about documents and things that a party may use to support a claim or defense." [ Note 4.]

Pursuant to Fed. R. Civ. P. 26(a)(1), a party is not obligated to disclose the name of every witness, document or thing that may have or contain discoverable information about its claim or defense, but merely the witnesses, documents and things having or containing discoverable "information that the disclosing party may use to support its claims or defenses." [ Note 5.] If, however, a party does identify a trial witness in its initial disclosures, the party must provide the subject matter(s) about which each identified witness is likely to have discoverable information, as well as any known addresses and/or phone numbers for the identified witness. [ Note 6.] In addition, a party must either provide the location of all identified documents in its initial disclosures, or, in the alternative, produce them. [ Note 7.]

Initial disclosures are not a substitute for taking comprehensive discovery. [ Note 8.] Nonetheless, discovery in Board proceedings should be more limited in scope than in district court cases since Board jurisdiction is limited to determining a party’s right to obtain or retain a registration. [ Note 9.] However, in the spirit of cooperation, parties can, subject to Board approval, stipulate to rely on more expansive use of reciprocal disclosures in lieu of formal discovery, as a more efficient and less costly means of litigating a Board proceeding. [ Note 10.]

There is no concept of priority in regard to initial disclosures, and a party is not relieved of its obligation to make or supplement initial disclosures merely because it may not have received such disclosures or supplementation from an adverse party or parties. [ Note 11.] For information regarding the duty to supplement initial disclosures, see TBMP § 408.03.

A party making initial disclosures has the option of disclosing information about the existence and location of documents instead of producing copies of documents. [ Note 12.] However, the Board encourages parties to actually exchange copies of disclosed documents rather than to merely identify their location. [ Note 13.]

Initial written disclosures and initial disclosures of documents are treated like responses to discovery requests insofar as they may be used in support of or in opposition to a motion for summary judgment and may, at trial, be introduced by notice of reliance. [ Note 14.] For more information on motions for summary judgment and introduction of disclosures at trial by notice of reliance, see TBMP § 528 and TBMP § 704.14.

Pertinent information under Fed. R. Civ. P.26(a)(1) stored in digital or electronic form must also be identified in initial disclosures. For further information regarding the discovery of electronically stored information, see TBMP § 402.02.

A party failing to make initial disclosures may be subject to a motion to compel, and ultimately, a motion for discovery sanctions. [ Note 15.]

In addition, a party may not file a motion for summary judgment until the party has made its initial disclosures, except for a motion asserting claim or issue preclusion or lack of jurisdiction by the Board. [ Note 16.]

For further information regarding the duty to cooperate and remedies for failure to make initial disclosures, see TBMP § 408.01(b) and TBMP § 411.01.

NOTES:

 1.   37 CFR § 2.120(a)(1), 37 CFR § 2.120(a)(2)  and 37 CFR § 2.120(a)(3).

 2.   37 CFR § 2.120(a)(3). See Amazon Technologies, Inc. v. Wax, 93 USPQ2d 1702, 1704-06 (TTAB 2009) (party objecting to discovery due to proponent’s alleged failure to make initial disclosures must specifically articulate that objection); Boston Red Sox Baseball Club LP v. Chaveriat, 87 USPQ2d 1767, 1768 (TTAB 2008) (parties’ notice of waiver of initial disclosures approved).

 3.   See 37 CFR § 2.120(a)(1). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246(August 1, 2007); Influance Inc. v. Zuker, 88 USPQ2d 1859, 1861 (TTAB 2008) (initial disclosures must be signed by party or party’s attorney to comply with Fed. R. Civ. P. 26(g)).

 4.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 5.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007). See Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1326 (TTAB 2011) (because an exhaustive search for all information or potential witnesses is not required, Board did not exclude the testimony of certain witnesses named for the first time in pretrial disclosures based on the failure to name them in initial disclosures, though the testimony for most witnesses was excluded for other reasons); Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444 n.1 (TTAB 2009) ("A party need not, through its mandatory initial disclosures, identify particular individuals as prospective trial witnesses, per se, but must identify ‘each individual likely to have discoverable information that the disclosing party may use to support its claims or defenses.’ . . . Individuals identified through initial disclosures therefore could reasonably be viewed as possible witnesses.")... But see Byer California v. Clothing for Modern Times Ltd., 95 USPQ2d 1175, 1179 (TTAB 2010) (where opposer identifies trial witness in pretrial disclosures who was not identified in initial disclosures, opposer ordered to serve revised pretrial disclosure limiting testimony witness to subjects on which second trial witness that was identified in initial disclosures is expected to testify).

 6.   Influance Inc. v. Zuker, 88 USPQ2d 1859, 1861 (TTAB 2008).

 7.   Influance Inc. v. Zuker, 88 USPQ2d 1859, 1861 (TTAB 2008).

 8.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 9.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245-46 (August 1, 2007).

 10.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 11.   Fed. R. Civ. P. 26(a)(1)(E).

 12.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42254 (August 1, 2007).

 13.   Influance Inc. v. Zuker, 88 USPQ2d 1859, 1861 n.4 (TTAB 2008).

 14.   37 CFR § 2.127(e)(2)  and 37 CFR §  2.120 (j)(3)(i). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 15.   37 CFR § 2.120(e); 37 CFR § 2.120(g)(1); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42256 (August 1, 2007). See also Luster Products Inc. v. Van Zandt, 104 USPQ2d 1877, 1878-79 (TTAB 2012) (motion to compel is available remedy for failure to serve, or insufficient, initial disclosures).

 16.   37 CFR § 2.127(e)(1). See, e.g., Qualcomm, Inc. v. FLO Corp., 93USPQ2d 1768, 1769-70 (TTAB 2010) (motion for summary judgment denied as premature where movant had yet to serve initial disclosures).